O-312-18 TRADE MARKS ACT 1994 IN THE MATTER OF TRADE MARK APPLICATION Nos. 3139254, 3139258 and 3139259 IN THE NAME OF WAL-MART STORES, INC. TO REGISTER THE FOLLOWING TRADE MARKS IN CLASS 25 1) TAILOR AND CUTTER 2) (series of two) 3) (series of two) AND OPPOSITION THERETO UNDER OPPOSITION NOS 406281-3 BY TAILOR AND CUTTER (CAMBRIDGE) LIMITED AND IN THE MATTER OF TRADE MARK REGISTRATION Nos. 3003551 and 3003552 FOR THE MARKS 1 1) 2) TAILOR AND CUTTER STANDING IN THE NAME OF WAL-MART STORES, INC. AND AND AN APPLICATION FOR INVALIDATION THERETO UNDER NOS. 501557&8 JOINTLY BY ANDREW CAMPBELL JACKSON, TAILOR AND CUTTER LIMITED and TAILOR AND CUTTER (CAMBRIDGE) LIMITED AND IN THE MATTER OF TRADE MARK APPLICATION NO. 3122696 IN THE NAME OF TAILOR AND CUTTER (CAMBRIDGE) LIMITED TO REGISTER THE FOLLOWING TRADE MARK IN CLASSES 14 AND 25: TAILOR & CUTTER TAILOR AND CUTTER (series of two) AND OPPOSITION THERETO UNDER NO. 407960 BY WAL-MART STORES, INC. 2 Background and pleadings 1. These consolidated proceedings concern: (a) Oppositions 406281-3 by Tailor and Cutter (Cambridge) Limited (‘T&C’) against applications 3139254, 3139258 and 3139259 all filed on 4 December 2015 by Wal-Mart Stores, Inc. (‘Wal-Mart’) to register the following marks all in Class 25: (i) word mark ‘TAILOR & CUTTER’, (ii) (series of two), and (iii) (series of two) The earlier relied upon mark is for ‘TAILOR & CUTTER’ and ‘TAILOR AND CUTTER’ (series of two). The applications are also opposed on the basis of an alleged common law right in a business operating under the term ‘TAILOR & CUTTER’. (b) Invalidity application numbers 501557 and 501558 by joint applicants Andrew Campbell Jackson, Tailor and Cutter Limited and T&C (‘joint T&C applicants’) to invalidate Wal-Mart’s trade mark numbers 3003551 ‘TAILOR & CUTTER’ and 3003552 . The invalidation actions are based on its alleged 3 associated common law rights in a business operating under the term ‘TAILOR & CUTTER’. (c) Opposition no. 407960 by Wal-Mart against trade mark application no 3122696 for the mark TAILOR & CUTTER which was filed on 17 August 2015 by T&C in classes 14 and 25. The grounds of opposition are that (a) the mark is devoid of any distinctive character, (b) the mark is descriptive, (c) the mark is customary in the trade, (d) the application was made in bad faith (this bad faith claim was withdrawn at the hearing so nothing further shall be said about it), and (e) it is identical/similar to the opponent’s earlier trade mark registration no. 3003551 TAILOR & CUTTER in class 25. 2. The respective parties filed counterstatements denying the grounds of opposition and invalidation put forward by the other party. Representation 3. A hearing was held on 20 March 2018 at which Mr Iain Purvis QC, instructed by Appleyard Lees IP Ltd, appeared as counsel for Wal-Mart and Mr Tom St Quinton, instructed by Maguire Boss, appeared as counsel for Mr Jackson, T&C and T&C joint applicants. The evidence Mr Jackson and T&C joint applicant evidence Witness statement of Andrew Jackson 4. Mr Jackson is the sole director of the joint applicants. He was also sole director of the now dissolved UK company Rose Crescent Tailoring Limited, previously called Tailor and Cutter Limited. Mr Jackson, alongside his wife, is also a director of UK Franchise Limited. 4 5. Exhibit AJ1 to his statements consists of Company House extracts relating to the companies which Mr Jackson has been a director. He provided the following table: Company No History 03318039 13/02/1997: incorporated under the name ‘Tailor & Cutter Limited’. 15/04/2011: changed name to ‘Rose Crescent Tailoring Limited’. 27/09/2011: Dissolved 05776185 10/04/2006: incorporated under the name: ‘UK Franchise Limited’ 08/09/2011: changed name to ‘Tailor & Cutter Limited’ 05775382 10/04/2006:incorporated under the name ‘Tailor & Cutter (Cambridge) Limited’ 09273842 21/10/2014: incorporated under the name ‘UK Franchise Limited’ 6. Mr Jackson states that since 1997, whether operating as a sole trader or through one of the above mentioned companies, he has made significant and continuous use of the trade mark TAILOR & CUTTER throughout the UK for high quality bespoke tailoring services, high quality bespoke-tailored clothing, including suits, shorts, jackets and tuxedos, jewellery, fashion accessories, and associated retail services. 7. Mr Jackson states that he has sold over £1.75 million worth of TAILOR & CUTTER branded garments to date, and provides the following breakdown of turnover figures: Year Turnover (inc. VAT) Company/Undertaking 2003 £95,113 Tailor and Cutter (Sole Trader) 2004 £137,294 Tailor and Cutter (Sole Trader) 2005 £163,278 Tailor and Cutter (Sole Trader) 2006 £115,439 T&C 2007 £218,128 T&C 2008 £174,831 T&C 2009 £119,291 T&C 2010 £101,893 T&C 2011 £90,600 T&C 5 2012 £92,617 Tailor and Cutter (Cambridge) Ltd 2013 £95,209 Tailor and Cutter (Cambridge) Ltd 2014 £89,592 Tailor and Cutter (Cambridge) Ltd TOTAL: £1,499,295 8. Exhibit AJ2 consists of a Natwest bank paying in slip for ‘Mr A C Jackson trading as Tailor & Cutter’. Mr Jackson states that it is clearly from the 1990s since the section of the paying–in slip where the year is to be entered reads ‘19__’. 9. Exhibit AJ3 comprises of Whois reports for the domain names ‘tailorandcutter.co.uk’ and ‘tailorandcutter.com’. They indicate that the domains were registered in 1999 and are in the name of Tailor and Cutter (Cambridge) Limited. 10. Exhibit AJ4 to the witness statement consists of a number of historical internet extracts obtained from the Wayback Machine dated between 2005 and 2015. The web page includes the heading ‘TAILOR & CUTTER’ with ‘Bespoke Tailors & Shirtmakers’ below it. The text on the web page states ‘Tailor and Cutter are pleased to offer a full range of personal Tailoring Services for Gentlemen…We are also able to offer a world renown short making service and a large selection of gentlemen’s accessories.’ 11. Exhibit AJ5 consists of a selection of invoices from a fabrics company called Ringhart Fabrics London addressed to ‘Tailor & Cutter’ in Peterborough. They are dated 1999, 2003, 2005, 2007 and 2012 and for relatively low amounts (ranging from £16.33 to £161.40). 12. Exhibit AJ6 consists of invoices from 2008, 2010 and 2012 in respect of the rent due on the Rose Crescent and All Saints premises. The 2010 invoice relates to 17 Rose Crescent and is for advanced payment for the quarter March to June 2010. Therefore, it is for a period prior to the dates given below, though this does not make any material difference. Mr Jackson advises that the various premises he has occupied are as follows: - 37 Broadway, Peterborough (1997 – 2006) - 11a High Street, Stamford (2003 – 2009) 6 - 17 Rose Crescent, Cambridge (2011 – present) - 7 All Saints Passage, Cambridge (2011 – present) - 63 High Street, St Martins, Stamford (2015 – present) 13. To corroborate the above, Mr Jackson has submitted copies of landlord and character references written by third parties and invoices from the various landlords.1 14. Exhibit AJ8 contains photographs of the ‘Tailor and Cutter’ shops in Cambridge. These are reproduced below: 11a High Street, Stamford (photo taken in 2009) Rose Crescent, Cambridge (photo taken in 2010) 1 Exhibits AJ6 and AJ7 7 15. Exhibit AJ9 comprise of three invoices all from Barker Signs to Tailor and Cutter. The first is dated 30 June 2003 and addressed to 36 Broadway for ‘Signwrites’. The second is dated 30 January 2007 and addressed to Tailor & Cutter at 11a High Street for ‘Signwrite’. The last invoice is dated 14 December 2009 addressed to 17 Rose Crescent to supply and fit lettering to a window. 16. Exhibits AJ10 consists of Yellow Pages entries for the Cambridge edition for the period 2000-2015. Exhibit AJ11 also consists of Yellow Pages entries but these are for the Peterborough edition for the period 1997-2015. To corroborate the advertisements, Mr Jackson submits under exhibit AJ12 confirmation of payment to Yellow Pages. Whilst the address changes, the advertisements generally appear as follows: 17. Further advertising includes a leaflet2 (as reproduced below) which it says was in use from 1997 to 2006. The cover of the leaflet also appears on the website. No circulation or website visit figures have been provided. 2 Exhibit AJ13 8 18. Exhibits AJ14 consist of copies of advertisements that appeared in ‘STAMFORD LIVING’ dated October 2006. Exhibit AJ15 is a compliment slip and a copy of terms and conditions. Both include the non-stylised words TAILOR & CUTTER and neither are dated. 19. Exhibit AJ16 consists of photographs of labels as they appear on some clothing and cufflink boxes. They are not dated and Mr Jackson states that ‘not every customer chooses to have a pocket label, but most jackets would include one’. 20. Mr Jackson states that it would take over 40 hours to make a high quality bespoke-tailored man’s suit since it would be carefully measured.3 He also states that he offers a visiting service whereby a tailor would travel to meet the customer. Mr Jackson refers to the Yellow Pages advertisements which offer ‘Home visits’ and under exhibit AJ18 3 Exhibit AJ17 is an undated example of a Customer Measure Sheet’ 9 21. Mr Jackson then states that his business had been damaged by Asda’s use of the term TAILOR & CUTTER (Asda’s being a subsidiary of Wal-Mart). 22. Mr Jackson states that there have been numerous instances whereby his business has been associated or considered to be part of Asda, and therefore part of Wal-Mart.